IP Law Daily, TRADEMARK—T.T.A.B.: Chinese registrant’s marks IJOY and IJOY GROUP succumb to cancellation challenge, (Aug 19, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Owners of the NJOY mark for electronic cigarettes established priority and likelihood of confusion with the marks IJOY and IJOY GROUP.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of two registrations for the marks IJOY and IJOY GROUP for cigarettes, electronic cigarettes, and related products on the ground of likelihood of confusion with NJOY marks registered in connection with electronic cigarettes. The TTAB found that Njoy, LLC proved its entitlement to a cause of action, as well as priority and likelihood of confusion by a preponderance of the evidence (Njoy, LLC v. Shenzhen IJoy Technology Co., Ltd., No. 92081215 (T.T.A.B. July 30, 2025)).

Background. Njoy, LLC, is an American company that manufactures and distributes electronic cigarettes and vaping products. Njoy, LLC filed a petition to cancel the registered stylized marks IJOY and IJOY GROUP in International Class 34 owned by Shenzhen IJoy Technology Co., Ltd. (Shenzhen), located in China. Njoy, LLC sought to cancel both registrations on the grounds that Shenzhen’s marks are likely to cause confusion with its previously used and registered NJOY and NJOY formative marks under Section 2(d) of the Trademark Act; and the doctrines of res judicata (claim preclusion) and collateral estoppel (issue preclusion) bar re-litigation of this case based on the TTAB’s entry of final judgment in a prior opposition proceeding involving Njoy, LLC and Shenzhen’s predecessor-in-interest, NJOY, LLC v. Wang Xi Zhi, Opp. No. 91218230, TTAB April 16, 2020, (Prior Opposition).

Entitlement to a statutory cause of action. Njoy, LLC’s Senior Director, Financial Planning & Analysis, testified that NJOY branded products have achieved great commercial success; and that Njoy, LLC has invested a substantial amount of time, effort, and money in advertising, marketing, and promoting its products under the NJOY mark since 2007. Further, upon review of Shenzhen’s trademark registrations, she believes that Shenzhen’s use and registration of its registered marks are damaging and will continue to damage NJOY and its valuable trademark and trade name rights in its NJOY mark. The TTAB noted that Shenzhen even admitted in its Answer that Njoy, LLC is the owner of its valid and subsisting pleaded registrations. Accordingly, Njoy, LLC demonstrated, by a preponderance of the evidence, that it possesses a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for its belief of damage and has proven its entitlement to bring the instant cancellation proceeding.

Priority. The TTAB noted that Shenzhen in its Answer to the Petition to Cancel admitted that Njoy, LLC “has priority based on its pleaded valid and subsisting prior-issued registrations for the NJOY mark and prior use of the NJOY mark and NJOY trade name for the NJOY Products and Services since before the filing date of the application that matured into Registration Nos. 6763037 and 6763038, the issuance date of Registration Nos. 6763037 and 6763038, Shenzhen’s claimed dates of first use, and any dates of first use that may be proved by Shenzhen.” The TTAB found this admission sufficiently broad to cover all of Njoy, LLC’s pleaded registered and common law NJOY marks as well as priority based on constructive or actual use. Accordingly, Njoy, LLC established priority.

Likelihood of confusion. In assessing the likelihood of confusion claim, the TTAB focused on the Njoy, LLC’s two pleaded registrations for the standard character mark NJOY, Registration No. 3427769 for “smoking simulators, namely, electronic cigarettes” in International Class 9 and Registration No. 4091150 for “electric cigarettes; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes” in International Class 9. If confusion is likely between these two pleaded registrations owned by Njoy, LLC and Shenzhen’s registered stylized marks IJOY and IJOY GROUP, the TTAB need not consider the likelihood of confusion between Shenzhen’s registrations and Njoy, LLC’s other pleaded marks, including its common law marks.

In determining whether confusion is likely, the TTAB considered all relevant DuPont factors. The TTAB found that the literal portions of each mark, IJOY and NJOY, are almost identical. Each mark is comprised of four letters, ending with the letter string J-O-Y to denote the word “joy.” The stylized font depicted in Shenzhen’s mark is not enough to distinguish it in appearance from Njoy, LLC’s standard character mark NJOY. The TTAB noted that as a standard character mark, Njoy, LLC has the flexibility to depict its mark NJOY in any font, style, size, or color, including the exact stylized font as Shenzhen’s mark. Comparing the marks overall, they are similar in their entireties in terms of appearance, sound, connotation and commercial impression. Thus, the first DuPont factor weighed in favor of finding a likelihood of confusion for Shenzhen’s registered stylized mark.

In light of Shenzhen’s admissions in its Answer, the second DuPont factor weighed in favor of finding a likelihood of confusion. Shenzhen admitted in its Answer that “Shenzhen’s Goods and the NJOY Products and Services offered and sold by NJOY in connection with its NJOY Mark are identical and/or closely related products and services.

Shenzhen argued that the parties do not share the same trade channels because each has their own business-to-consumer websites and brick and mortar stores. The TTAB found Shenzhen’s argument misplaced because the record showed that the parties’ goods identified as “electronic cigarettes” are identical and the normal trade channels for both Njoy, LLC’s and Shenzhen’s goods include authorized online and brick-and-mortar tobacco retailers. Consequently, the third DuPont factor weighed in favor of finding a likelihood of confusion.

Based on the Prior Opposition, Shenzhen is collaterally estopped from relitigating the issues of the strength and weakness of Njoy, LLC’s NJOY registered mark and the lack of any reported instances of actual confusion, despite the parties’ coexistence in the marketplace. Consistent with the Prior Opposition, the fifth DuPont factor weighed in favor of finding a likelihood of confusion, while the sixth, seventh and eighth factors were neutral. Thus, the TTAB concluded that confusion is likely.

Accordingly, the petition to cancel Shenzhen’s registrations was granted.

The Case is Cancellation No. 92081215.

Judge: Lykos, A.

Attorneys: David M. Kelly (Kelly IP, LLP) for Njoy, LLC. Di Li (Di Li Law, P.C.) for Shenzhen IJoy Technology Co., Ltd.

Companies: Njoy, LLC; Shenzhen IJoy Technology Co., Ltd.

Cases: Trademark USPTO